Appeal 2007-0693
Application 10/188,519
1 overlap (and virtual identity) between Boer’s disclosed range of ethylene-
2 propylene content (at least 80 percent to less than 100%) and the claimed
3 range (“70-95%”) compels a conclusion that a person having ordinary skill
4 in the art would have found the subject matter of appealed claim 1 at least
5 prima facie obvious in view of the applied prior art. In re Peterson, 315
6 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003)(“In cases
7 involving overlapping ranges, we and our predecessor court have
8 consistently held that even a slight overlap in range establishes a prima facie
9 case of obviousness.”).
10 Appellants argue that the lower limit of 70% by weight of the
11 “ethylene-propylene weight content” (i.e., the combined weight of the
12 ethylene and propylene relative to the weight of all the monomers) is not
13 taught in the reference. (Br. 13.) This argument is unpersuasive because
14 any value within the claimed range is a description of the claim limitation in
15 question. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
16 USPQ2d 1943, 1946 (Fed. Cir. 1999)(“[W]hen a patent claims a chemical
17 composition in terms of ranges of elements, any single prior art reference
18 that falls within each of the ranges anticipates the claim.”). That appealed
19 claim 1 is broader than the prior art in terms of reciting a lower minimum
20 ethylene-propylene content is not a basis upon which the claim can be found
21 to be patentable over the prior art.
22 Appellants contend that “‘obvious to try’ is not to be equated with
23 obviousness under 35 U.S.C. § 103.” (Br. 13.) We find this argument
24 unpersuasive because the applied prior art itself provides a suggestion to
25 arrive at the claimed subject matter, as we discussed above. Moreover, the
17
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